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81 Geo. Wash. L. Rev. Arguendo 1 (2012-2013)

handle is hein.journals/gwargu81 and id is 1 raw text is: Why Patentable Subject Matter Matters
for Software
Brian J. Love*
ABSTRACT
Increasingly, courts weary from years of arguing about the scope of
patentable subject matter for software patents seem ready to throw in the
towel. Rather than continue efforts to craft a test for determining when a
software invention graduates from an abstract idea or mere algorithm into a
patentable invention, several recent Federal Circuit opinions dismissively reject
section 101 challenges as attacks that should be made instead under sections
102, 103, and 112. This short Essay criticizes this recent trend in patentable
subject matter jurisprudence. Accused infringers look to section 101 for relief
not because doing so is a convenient shortcut around more traditional checks
on patentability, but rather precisely because traditional checks on
patentability have proven to be woefully ineffective weapons against overbroad
software patents.
INTRODUCTION
It's not hard to see why many think software patents are a scourge.
Studies suggest that they encourage very little innovation,' impose a
great deal of cost on innocent technology companies,2 and are almost
*   Assistant Professor, Santa Clara University School of Law. Thanks to Michael
Risch for comments on an early draft, Bernard Chao for helpful discussions that
spurred me to write this Essay, and Santa Clara University School of Law's Faculty
Scholarship Support Fund. Disclosure: Earlier this year I consulted on a limited part-
time basis as a Special Counsel with Wilson Sonsini Goodrich & Rosati ('WSGR).
WSGR represented WildTangent, Inc. in Ultramercial, LLC v. Hulu, LLC, No. 09-CV-
06918 RGK (PLAx), 2010 WL 3360098 (C.D. Cal. Aug. 13, 2010), discussed infra. That
representation ended before the case was appealed to the Federal Circuit and before I
performed any work for the firm. The views expressed in this Essay are mine alone
and do not necessarily reflect the views of WSGR or WildTangent.
1 See, e.g., Stuart J.H. Graham et al., High Technology Entrepreneurs and the
Patent System: Results of the 2008 Berkeley Patent Survey, 24 BERKELEY TECH. L.J. 1255,
1262, 1289-90 (2009) (finding in a survey of start-up companies that (1) first mover
advantage, not patent protection, was the most important means to capture
competitive advantage in the software industry; and (2) the majority of start-up
companies in the software industry hold no patents at all). Consider also that the
software industry flourished in the late 1980s and early 1990s despite the fact that
software was not clearly patentable until the late 1990s. See Julie E. Cohen & Mark A.
Lemley, Patent Scope and Innovation in the Software Industry, 89 CALIF. L. REV. 1, 8-11
(2001).
2 In an event study of accused infringers' stock prices following suit, Professor
James Bessen et al. found that the average non-practicing entity (NPE) suit cost
accused infringers $122 million. James Bessen et al., The Private and Social Costs of
September 2012 Vol. 81 Arguendo

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